Contributory infringement

Section 271(c) lists the elements of contributory infringement¹:

• the item is a component, material or apparatus of the kinds listed above, offered for sale, sold or imported¹;
• it constitutes a material part of the invention¹;
• the seller knows it to be especially made or especially adapted for use in an infringement of the patent¹;
• and it is not a staple article or commodity of commerce suitable for substantial noninfringing use¹.

On the word "actively" in section 271(b), the Supreme Court read it as suggesting that the inducement must involve the taking of affirmative steps to bring about the desired result³.

Three Supreme Court decisions set the mental element^2,3,5.

In Global-Tech the Court described willful blindness as having two basic requirements: the defendant must subjectively believe that there is a high probability that a fact exists, and must take deliberate actions to avoid learning of that fact. The Court said this scope surpasses recklessness and negligence³. Global-Tech also treated the holding in Aro II as the basis for requiring knowledge of the patent under section 271(c), and reasoned that section 271(b) needs the same knowledge³.

In Commil the Court added that noninfringement and invalidity are listed as two separate defenses in 35 U.S.C. 282(b), and that defendants are free to raise either or both⁵. So invalidity can still be raised as a defense to the patent claim, even though a belief in invalidity does not negate inducement. See Willful infringement for another doctrine that turns on the infringer's state of mind.

In Aro II the Court said that, to decide whether the seller committed contributory infringement, it first had to determine whether the purchasers committed direct infringement. It described the direct infringement by the purchasers as a prerequisite to contributory infringement².

In Limelight Networks, Inc. v. Akamai Technologies, Inc. (2014) the Court applied the same principle to inducement. It said its case law leaves no doubt that inducement liability may arise if, but only if, there is direct infringement⁴. Assuming without deciding that a method is not infringed unless all of its steps are attributable to one person, the Court held that, because no one had directly infringed the method, there could be no inducement under section 271(b)⁴. The Federal Circuit's contrary view, which would allow inducement where no one had directly infringed, was reversed⁴.

The Agreement on a Unified Patent Court (UPCA) has a separate rule on indirect use of the invention (Article 26). Article 25 sets out the right to prevent direct use⁶. The table compares the UPCA rule with the US rules.

Article 26(3) adds that persons performing the acts referred to in Article 27(a) to (e), which include acts done privately and for non-commercial purposes and acts done for experimental purposes relating to the subject matter of the patented invention, are not considered parties entitled to exploit the invention⁶.

For a European patent that is litigated outside the UPC, Article 64(3) EPC provides that any infringement of a European patent is dealt with by national law, so indirect infringement rules depend on the country⁷. This page does not describe national rules. See Unified Patent Court Agreement for the UPCA.

A Supreme Court decision sets the knowledge standard for inducement³.

The Court held that induced infringement under section 271(b) requires knowledge that the induced acts constitute patent infringement, and that willful blindness can satisfy that requirement. It affirmed the judgment because the evidence supported a finding of knowledge under willful blindness3.